Monday, 23 February 2015

T 0233/12 - Heared, but not listened to?

A European patent application was refused during oral proceedings while no one was present for the appli­cant. In preparation for the oral proceedings, the applicant had filed amended claims along with corresponding arguments. The exa­mining division considered that the pro­posed amendments "prima facie [...] contradict[ed] the requirements of Articles 84 EPC and/or 123(2) EPC" and therefore did not give its "consent to the proposed amendments under Rule 137(3) EPC".

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division to refuse European patent application No. 07103013.4.

II. The decision was delivered during oral proceedings. In preparation for them, the applicant had filed amended claims along with corresponding arguments. At the oral proceedings however no one was present for the appli­cant. The exa­mining division considered that the pro­posed amendments "prima facie [...] contradict[ed] the requirements of Articles 84 EPC and/or 123(2) EPC" and therefore did not give its "consent to the proposed amendments under Rule 137 (3) EPC". The application was then refused under Article 97 (2) EPC with reference to Article 78 (1) (c) EPC.

III. The applicant filed its notice of appeal against this decision on 17 November 2011 and paid the appeal fee on the same day. A statement of grounds of appeal was received on 13 January 2012. The appellant requested that the de­cision be set aside and that the application ei­ther be allowed to grant or returned to the examining di­vi­sion to continue the examination proceedings. Oral proceedings were reques­ted before an adverse decision were to issue.

IV. Claim 1 as originally filed reads as follows: [...]

Claim 1 as filed on 8 December 2009 differs from ori­gi­nal claim 1 by the addition of the following features at the end: [...]

Claim 1 as filed on 23 March 2011 and as subject to the refusal reads as follows. The amendments over previous claim 1 are marked: [...]

Apart from an independent method claim, the sets of claims each contain an independent computer system claim and a claim meant to cover the "physical peripheral device" as referred to in the method and computer system claims. Their precise wording is not material to this decision.

Reasons for the Decision

[...]

Reasons in the decision under appeal for not admitting the last set of claims

3. The examining division took issue with this last amend­ment, arguing as follows (see decision; p. 2, 4th para. from the bottom):

"The new wording of the claim is broader than the pre­vious wording as it e.g. covers the situation where a virtual machine is associated with a physical peri­phe­ral device different from the device used to ori­gi­nally instantiate the virtual machine. The expanded scope of the claims is not supported by the descrip­tion, which discloses no such embodiment. The proposed amendments therefore appears, prima facie, to contra­dict the requirements of Articles 84 and/or Article 123(2) EPC".

Based on this prima facie assessment, for which no fur­ther reasons were given, the examining divi­sion decided not to admit the latest amendments and, there being no other request, to refuse the application.

Deficiencies of the decision

4. The board first notes that Article 123 (2) EPC pro­hi­bits amendments to claims from going beyond the content of the application as filed. Since the "previous wor­ding" of the claims was different from their wording as filed, the observation in the decision that "the claim is broa­der than the previous wording" cannot by itself jus­tify the objection under Article 123 (2) EPC. Article 84 EPC 1973 requires that the claims be suppor­ted by the de­scrip­tion, be it in their wording as filed or in an amended version. The observation that the claims were "broader than the previous wording" is therefore immaterial to the question of compliance with Article 84 EPC 1973.

5. The reasoning of the examining division relies on a short phrase specifying a situation allegedly applying to the new claims and the assertion that the descrip­tion did not disclose or support it.

5.1 The specified situation is that a peripheral device could be "asso­ciated" with a virtual machine which had been in­stantiated in response to the attachment of another peripheral de­vice.

5.1.1 The board notes that neither the claims nor the de­scrip­tion defines explicitly the concept of "asso­ci­a­tion" between a virtual machine and a peripheral de­vice. The description refers to devices being "asso­ci­ated" with virtual machines in paragraph 31 of the de­scription which sets out the detachment procedure, and in figure 7. Since the detachment is clearly meant to be the inverse of the attachment procedure as set out in paragraph 30, the board finds it unambiguously clear from the de­scription that a peripheral device is meant to be "asso­ciated with" the virtual machine which was instan­tiated from it. There is no indication anywhere in the de­scrip­tion that this "association" could or should be changed. The skilled person would therefore un­der­stand from the de­scription that a peripheral de­vice will be "asso­ci­a­ted" with one and the same virtual ma­chine as long as it re­mains attached to the host sys­tem. Hence, when­ever a peripheral device is detached, the virtual ma­chine to be de-allocated can only be the one that was instantiated when that peripheral device was previously attached.

5.1.2 The board thus considers that, on a proper construction of the claims in view of the description, the skilled person would not have considered the claims to cover the above-mentioned situation. The board can only speculate that the examining division considered that situation to be a theore­ti­cally possible instance of the claims on file due to the vague concept of "association". How­ever, the examining division did not discuss the claimed term "associated" in the decision at all, let alone explain why it had to be construed and how and why a particular inter­pre­­tation was justified.

5.1.3 The board concludes that the decision does not satisfac­torily explain why the above-mentioned situation was thought by the examining division to be covered by the claims on file. As a con­sequence, the board consi­ders the decision to be insufficiently reasoned, Rule 111 (2) EPC 1973.

5.2 Furthermore, the decision merely asserts that the si­tuation in question was not supported by the descrip­tion without further explanation.

5.2.1 The appellant had explained in its submission of 23 March 2011 what the amendments were meant to express and where the amendments had a basis in the appli­ca­tion as originally filed, in particular by reference to para­graphs 29-31.

5.2.2 The right to be heard under Article 113 (1) EPC is not just a right to present comments but also to have those comments duly considered (see e.g. J 7/82, OJ 1982, 391, and T 246/08, reasons 2.2).

5.2.3 Accordingly, the examining division should have ex­plained why the passages indicated by the appellant did not support the amendment at issue. The fact that it did not amounts to a violation of the right to be heard under Article 113 (1) EPC.

The discretionary decision

6. Rule 137 (3) EPC states that any second and "fur­ther amendment" to the description, claims and drawings requires the consent of the examining division. This makes admission of such a further amendment a matter of discretion for the examining division.

6.1 According to G 7/93 (OJ 1994, 775; reasons 2.6), if an applicant appeals against a discretionary decision of an exa­mi­ning di­vision not to admit amendments under Rule 86 (3) EPC 1973 (or, correspondingly, Rule 137 (3) EPC), it is not the function of a board of appeal to decide whether or not it would have exercised such dis­cre­tion in the same way as the first instance de­part­ment. Ra­ther, the board should only overrule the way in which a first instance department has exercised its dis­­cre­tion if it comes to the conclusion either that the first in­stance department in its decision has not exer­cised its discretion in accordance with the right prin­ciples, or that it has exercised its dis­cre­tion in an unreasonable way, and has thus exceeded the proper limits of its discretion.

6.2 The criterion that an amended set of claims is prima facie not allowable is, in general, an accepted prin­ciple (amongst others) to be taken into account in the the assessment of whether consent under Rule 137 (3) EPC should be given to the amendment.

6.3 While a prima facie finding that a claim is not allow­able may, by its very nature, be justified in brie­fer terms than a fully reasoned conclusion, the reasons for a prima facie finding may not be so short as to reduce the finding to a mere allegation. Moreover, the amount of reasoning required to justify a prima facie finding is amongst the parameters which the examining division has to balance in view of the circumstances of each individual case when exercising its discretion.

6.4 In particular, if, as in this case, an applicant files an amendment together with ar­gu­ments as to why the amendment, in its view, satis­fies a particular require­ment of the EPC, the examining division cannot merely assert the contrary without gi­ving an indication as to why the applicant's argument fails. That is, a prima facie finding must not simply ignore the arguments on file which appear to directly contradict it.

6.5 The board therefore concludes that the examining divi­sion has not exercised its discretion under Rule 137 (3) EPC in a reasonable way.

7. For the above reasons, the decision under appeal must be set aside. Since the decision was exclusively based on the fact that, once the only request had not been ad­mitted, there was no set of claims to de­ci­de upon and in particular did not contain any assess­ment of the sub­­stantive merits of the appli­cation, the board exer­cises its discretion under Article 111 (1) EPC 1973 and remits the case to the department of first instance for further prosecution. Finally, the deficiencies under Article 113 (1) EPC and Rule 111 (2) EPC 1973 make the reimbursement of the appeal fee under Rule 103 (1) (a) EPC equitable.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The appeal fee is to be reimbursed.

This decision has European Case Law Identifier: ECLI:EP:BA:2015:T023312.20150210. The whole decision can be found here (pdf). The file wrapper can be found here. Photo "Exploratorium" by Kathleen Franklin obtained via Flickr under CC BY 2.0 license (no changes made).